Registration has been refused pursuant to Section 2(a) of the Trademark Act, 15 U.S.C. 1052(a), on the ground that the marks are deceptive for clothing items not made wholly or in part of wool.

Applicant has appealed, and because the record and issues in both applications are substantially the same, one oral hearing was held on both cases, and we will decide both cases in the instant opinion.

The test for determining whether a mark is deceptive under Section 2(a) was recently articulated by the U.S. Court of Appeals for the Federal Circuit in In re Budge Manufacturing Co., Inc., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed.Cir.1988):

1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?

2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?

3) If so, is the misdescription likely to affect the decision to purchase?

The record shows that applicant was founded by John Rich in 1830 as a small woolen mill, developed a reputation for quality woolen products, and through the years has expanded its well-known line of woolen fabrics and garments and added new styles of apparel made from other fabrics. In 1949 it obtained a registration for "WOOLRICH" in script form for a wide variety of clothing items all of which were made of wool, as well as leather gloves and fabric gloves, leather shoes and pullman slippers; coats, caps and other items made of fur; and raincoats, collars, garters, suspenders and belts which were not restricted as to composition. [FN3] The registration claims first use of the mark in January, 1929. Applicant owns various other registrations, including one for "WOOLRICH" in script form with the design of a sheep, issued in 1983 for goods similar to those in the 1949 registration; [FN4] and one for "WOOLRICH" in block letters, issued in 1986 and claiming use in 1930, for clothing, namely coats, parkas, outerwear vests, gloves and scarves, and for various specified items of clothing made entirely or partly of wool. [FN5]

*2 It should be noted that of the two main elements of the presently applied-for marks, the word "WOOLRICH" has been used since at least as early as 1929 and the sheep design has been used as early as 1965, according to the dates claimed in the separate registrations for the elements.

Turning now to the first prong of the Budge test, we note that there is no question that applicant's identification of goods includes clothing items not made of wool. The issue, therefore, is whether "WOOLRICH" is misdescriptive of a characteristic of such goods. It is the Examining Attorney's position that the meaning conveyed by "WOOLRICH", based on common English language construction, is "rich in wool". Further, the sheep design in each mark reinforces this connotation. The Examining Attorney has also made of record an Australian publication in which "wool-rich" is used as an adjective to describe fabric. (The term "polyester-rich" is also used as a heading referring to fabric composition. [FN6]

Applicant, on the other hand, argues that just because a term contains the word "wool" does not mean it is descriptive or misdescriptive of clothing. In addition, applicant argues that any misdescriptive significance of "WOOLRICH" has been overcome because of applicant's long use of the mark for both woolen and nonwoolen clothing. In this connection, applicant points to declarations, made by managers and by buyers for clothing stores, in which the declarants stated the following:

The "Woolrich" label is well-known in the industry and has been in use for several generations.

The Woolrich Company has for many years supplied clothing made of various fabrics.

Clothing dealers and retail clothing customers alike to my personal knowledge substantially exclusively recognize the name "Woolrich" as a company name and a source of a variety of clothing products.

I have never known a customer or fellow salesman or dealer in this industry in at least the past ten years that interpreted a "Woolrich" label to mean that the garment it was on contained wool. Never have I heard the interpretation of a customer or dealer in this industry that "Woolrich" on a garment label signifies that the garment is "rich in wool".

While the Examining Attorney has made some excellent arguments in support of her position, and the record reflects the extensive and thorough work which she did in this case, we are not entirely convinced that consumers would perceive "WOOLRICH", presented as a single, unhyphenated word, as meaning "rich in wool". In this regard, the use in an Australian publication of "wool-rich" as an adjective does not persuade us that consumers in the United States would view the term in the same way; there is no evidence of such usage or recognition in the United States, either in dictionaries or publications. On the other hand, "WOOLRICH", as a single unhyphenated word, has the look of a surname. In this regard, we note that a number of well-known people have had surnames beginning with "wool" or ending with "rich", e.g., Frank Woolworth, Alexander Woollcott, and Samuel Goodrich. [FN7] It is permissible for us to consider these factors in determining consumer perception. See In re Industrie Pirelli, 9 USPQ2d 1564 (TTAB 1988).

*3 Essentially, we think that the evidence concerning the "look" of "WOOLRICH" supports both positions equally (or perhaps, because of the marks' incorporation of design of a sheep, favors the Examining Attorney's position a bit more).

What tips the balance in favor of applicant, though, is the evidence submitted by applicant of use and of recognition by consumers and the trade. This evidence demonstrates that the significance of "WOOLRICH" is that of a trademark indicating applicant and that any descriptive or misdescriptive significance that the term may have had when first adopted has been largely replaced by trademark significance as a result of applicant's long and extensive use.

We hasten to point out that a refusal made under Section 2(a) cannot be overcome merely because a mark has enjoyed long and extensive use. What we are saying here is only that all circumstances which may relate to the consumer's perception of the term must be considered in answering the first two questions of the Budge test. Cf. In re Seats, Inc., 757 F.2d 274, 225 USPQ 364 (Fed.Cir.1985). In this case, because of the mixed impression that is conveyed by applicant's marks, the evidence of acquired distinctiveness takes on a greater significance.

This brings us to the second prong of the Budge test, namely, if a mark is misdescriptive, whether prospective purchasers are likely to believe that the misdescriptiveness actually describes the goods. The Examining Attorney has made of record numerous examples of clothing items such as those included in the identification of goods being advertised as made of wool. Normally, if "Woolrich" were considered misdescriptive of nonwoolen clothing items, such evidence would be sufficient to show that consumers are likely to believe that clothing such as suits, dresses and slacks were made of wool. However, the circumstances in this case are somewhat different because of applicant's evidence of long use of the marks on a wide variety of clothing made of both woolen and nonwoolen fabrics. Applicant has stated that, by type of item, it offers more nonwoolen than woolen clothing, and the catalogs it has submitted demonstrate this point. Further, applicant uses its marks as housemarks for all of its clothing, of whatever fabric, as indicated in its identifications of goods. In view of these facts, consumers are likely to regard applicant's marks as identifying all the clothing applicant sells and not believe they refer only to clothing made of wool.

Our determination might be different if the evidence showed that applicant had always used its mark only in respect of woolen goods, so that consumers association of the mark with applicant was in connection with articles of woolen clothing only. In such a case, consumers would very likely believe that the mark identified applicant's woolen clothing.

A brief comment on another of applicant's arguments on this part of the Budge test is in order. Applicant has placed great reliance on the fact that federal law requires clothing to bear a fiber content label and argues that consumers who are concerned about the fabric would check this label and would not be deceived by the mark. We do not find this argument persuasive for two reasons. If consumers were truly deceived by the mark they would be likely to treat the mark as indicating the fiber content and therefore not feel the need to check the content label. Second, the fiber content label may not remain with the clothing if it is involved in a subsequent sale. See also In re Shapely, Inc., 231 USPQ 72 (TTAB 1986), for an additional discussion of the fiber- labeling argument.

*4 We readily admit that the first two parts of the test present very difficult questions, with strong evidence and arguments for both positions. In view of the closeness of the case, we think it permissible to consider the equities in resolving any doubts we may have in favor of applicant. See W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 153 USPQ 749 (CCPA 1967). Based on the application filing dates of its registrations, applicant has used the sheep element of its mark for almost twenty-five years, while the "WOOLRICH" portion of the marks--the element the Examining Attorney takes the real exception to--has been used almost twice that long. The Examining Attorney herself recognizes that applicant, which once dealt exclusively in woolen goods, might over the course of time wish to expand the types of clothing it sells and apply its mark to such clothing, thus taking advantage of the extensive good will it has built up in its mark.

Accordingly, considering the circumstances in their totality, and in particular the significant evidence of acquired distinctiveness presented by applicant, we find that applicant has rebutted the prima facie case the Examining Attorney has presented with respect to the first two parts of the Budge test. In view of this determination, we need not reach the third part of the Budge test. Instead, we conclude that the two WOOLRICH and design marks which are the subject of the applications are not deceptive. However, since our determination that the terms are not misdescriptive rests largely on the showing that the marks have acquired distinctiveness, applicant's claim under Section 2(f) will be entered on the face of the files.

Decision: The refusals to register Application Serial Nos. 670,691 and 706,812 are reversed.

J. D. Sams

J. E. Rice

E. J. Seeherman

Members, Trademark Trial and Appeal Board

FN1. Application Serial No. 670,691, filed July 7, 1987 and asserting first use and first use in commerce as early as March 25, 1965.

FN2. Application Serial No. 706,812, filed January 21, 1988 and asserting first use and first use in commerce as early as December 1, 1987. There is no indication of a claim to color, and it is assumed that the stippling shown in the drawing is a feature of the mark. It is noted that in its response filed May 19, 1988 applicant requested that this application be amended to include tote bags, toy animals, wall hanging fabrics, stadium cushions and tablecloths, all of which items are classified in classes other than International Class 25, in which the application was originally filed. It is further noted that applicant never filed the requisite fees for inclusion of these additional classes, and that applicant made no mention of them in subsequent papers. In fact, in its brief on appeal applicant listed the goods for which application was made, and the goods were limited to the Class 25 items listed in the main text. Accordingly, application Serial No. 706,812 is deemed to include only the Class 25 items. The identification of goods has been amended to correct the typographical error in the word "knickers", an error which applicant had noted and for which it had requested correction in application Serial No. 670,691.